Director Kappos’ Speech at William Mitchell College of Law

Our friend on Twitter (@TechLaw_Elman), and a contributing member of the Intellogist community (TechLaw_Elman), recently pointed us to a speech given by USPTO Director David Kappos on April 6, 2010 at the William Mitchell College of Law. The speech is long but it is full of information about current and future initiatives being undertaken by the USPTO. If you are interested in hearing more about these initiatives, I recommend that you listen to the entire speech, including the audience questions at the end but, in case you don’t have time to listen to all 79 minutes, here is an overview.

Director Kappos begins his speech around the 6:30 mark in the video.

During the introduction, Director Kappos remarks that “innovation is the only sustainable source of advantage for world economies” and noted that IP is becoming the “world’s currency of innovation.” He predicts that firms will be hire in places “where they can find the most talented workers and the best IP protection” and that “marketplace success will be less about low cost manufacturing and more about who will be innovating the products and services that firms produce.” This “rising tide of IP” he says, “will lift all the ships that participate as its champions.He acknowledges that it is taking “far too long for innovators to get patents” and that average total pendency “is nearly 3 years now” and “a lot longer than that in some art areas.” He goes on to say that, since the backlog has not worsened much in the last couple of years and patent application filings have remained static, the USPTO is “in the middle of a lost opportunity” to work the backlog down.
He stresses that “quality patents clearly produce confidence in the currency of innovation,” but he goes on to acknowledge that there is “no appropriate equation that sacrifices quality for pendency.”
In the first of several appeals for community participation, Director Kappos indicates that a new strategic plan is being laid out and implores the IP community to review the plan when it is published and submit comments and feedback.
He acknowledges that the USPTO has had many of the same goals for decades; reduce pendency, improve quality, update IT systems, and improve relationships with employees and the IP community. He goes on to say that, even though the USPTO has not been able to achieve these goals, they are the correct strategic priorities so the USPTO must do “something very, very different this time if we hope to achieve success.”
He talks about the need to vastly improve the metrics that are used to measure the USPTO. He says the agency will be rolling out a dashboard showing the numbers they use to track and measure progress, including measures of pendency. These pendency numbers will include RCEs, appeals, interferences, divisionals, and continuations.
He mentions the emphasis that is now being placed on leadership throughout the PTO which includes an “unrelenting focus on detail.”
He discusses some of the projects that are currently underway and mentions that there is a need to fix a “myriad of management systems… to get people aligned in their objectives and all working toward the same goals.”
He discusses the challenges of bringing new people up-to-speed, mentioning that it “costs literally hundreds of thousands of dollars and several years to train a new examiner to function at the level that we need at the agency.” In fact, he says, many examiners “first meet their production targets after the third year.” He indicates that the agency will use a different approach to hiring. Instead of focusing on technical college graduates who tend to have limited experience in the workforce “and virtually no understand of the Intellectual Property system,” the focus will be on hiring professionals that have knowledge of IP system, such as graduates from law school that have IP specialty programs, former examiners, patent attorneys and patent agents. He points out that junior examiners will still be sought, but the goal is to produce a “balanced workforce demographic for the USPTO.” The agency is currently in the process of hiring 250 people, and hopes to hire 1000 more in the upcoming financial year, and another 1000 the year after that. Finally, he discusses the ongoing development that will be needed for the examiner corps. This includes, training on claims writing which will allow the examiners to make “suggestions to applicants…help them rewrite their claims so we can create allowable subject matter…”
He acknowledges that, when he arrived at the USPTO, the count system wasn’t working and was decades out of date. A new count system was created that gives examiners “enough time to read specifications…carefully analyze claims, carefully search for prior art, and engage with applicants to do interviews…”
He gives examples of the inefficiencies that are being weeded out of the agency one at a time: The first example he provides is related to the notice of non-compliance rate. When the agency examined this they realized that there was “something so wrong with the system that 30% of applicants couldn’t figure out how to comply with it.” This led to the implementation of a new process to “consolidate the reviews on appeal brief into a single point of review,” the BPAI. The second example he mentions is finding ways to reduce the cost of provisional filings. This is being addressed via a new program that was announced on Friday and is currently open for public comment. This program enables applicants to get an additional 12 months to decide if they want to pursue non-provisional filing and has very “light-weight” submission requirements. Director Kappos stresses that he wants the IP community to weigh in and provide feedback on this program.
He mentions the “Application Acceleration” pilot for small entities (AKA “project exchange”) which was launched in January. This pilot allows a small entity with more than one application pending, to drop an application that the USPTO hasn’t started examining in exchange for advancing another application to the front of the examining queue.
He mentions the “Green Tech Initiative” pilot which allows pending applications that are related to climate change and energy efficiencies to be accelerated (only certain classes and subclasses are applicable). The applicant can submit a petition, for free, that will “move that application up to the front of the examining queue.” The pilot was capped at 3000 applications and there have already been 1000 applications.
The first audience member asked for information on dealing with a difficult USPTO examiner. Director Kappos indicates that the “Ombudsman Program” pilot, which was just launched, was designed to deal with situations such as this. The applicant can fill out a “simple online form” that will initiate a phone call, within 2 business days, with an ombudsman. The USPTO is “targeting 10 days to resolution of issues.”
The second audience member asked if the USPTO can list the challenges the agency faces on the website so that the innovator community can help find solutions. Director Kappos says that the vehicle being used for this is the Director’s blog.
The third audience member asked about rulemaking authority. Director Kappos mentions that the agency will be “careful and cautious about stepping into the controversy over substantive versus procedural rulemaking authority.” He does not want to “go back to a confrontational kind of relationship with the IP community.” This is why the agency is coming out with “notices for comments first not notices for rulemaking.”
The fourth audience member asked about IDS references. Director Kappos indicates that the agency is working on a complete ground-up redesign of the IT infrastructure which “will bring together, automatically, for the examiner the family history of the application, all the divisionals and CIPs that come before and came after, and all of the prior art that’s related and, oh by the way, it’s not that hard actually to do a lexical analysis on all the prior art and highlight the prior art that looks like it’s probably going to be close enough for the examiner to pay attention to in the present case.”
The fifth audience member asked if the USPTO can address the rule that requires remote workers to come to the office 2 hours per pay period. Director Kappos says that this duty station reporting requirement is “bizarre” and needs to be addressed. He says the USPTO is “advocating in favor of two separate bills that are pending in congress that will solve the duty station reporting requirement.” In addition, he outlined a workaround that may be implemented if the bills do not get passed.
The sixth audience member asked how the Patent and Trademark Depository Library program will be supported in the new strategic vision. Director Kappos outlines a few ideas.
The seventh, and final, audience member asked for recommendations on getting patentable subject matter through the process. Director Kappos offers three suggestions: 1) Complete an interview with the examiner. Statistics show that “if you use the early interview program your chances of getting a first action allowance go up by something like 600%.” 2) Use the Patent Prosecution Highway (PPH). He goes on to say that the average number of actions per disposal for all applications is 2.7 but if an applicant uses the PPH it’s 1.7. 3) “Do something to make it clear what your claim terms mean.” For example, “provide a glossary” in the specification. This will “really speed up the examiner’s work and make the examination process more effective for everybody in the IP community.”

Patent Searches from Landon IP

This post was contributed by Intellogist team member Julie Cook.


One Response

  1. Kappos has made, and continues to make, a series of smart PR moves. There is little question that his decisions have gone a long way toward improving the public image of the USPTO. Whether or not they will significantly, and positively, affect the practice of U.S. patent law remains to be seen. Nonetheless, I appreciate the new USPTO Director’s assiduous efforts.

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